Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Eleonora Rosati, Annsley Merelle Ward, Neil J. Wilkof, and Merpel. Nicola Searle is currently on sabbatical. Read, post comments and participate! E-mail the Kats here

The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy

Saturday, 31 December 2011

With the New Year upon us, I got to thinking in a way that only an IP attorney could -- how protectable are the words "New Year" as a trade mark? In principle, there should be no reason why this combination of words should be treated differently from any other word combination. The fact that the term consists of two commonly used words, and that the term itself has a clear meaning with respect to the order of the months of the Gregorian calendar, should not disqualify the words from protection when used in circumstances far-removed from their core meaning.

Actually, it may not be so clear thar the term "new year" has such a single, clear meaning. Consider the Jewish Tractate "Rosh HaShanah" in the Babylonian Talmud, which begins as follows: "There are four New Year days, one for the ascension of Kings and the order of the holidays, a second for the tithing of cattle, a third signifying the New Year for counting the ordinary year, the Sabbatical year and the Jubilee year, and the fourth for the counting of trees and herbs" (this actually takes place on the 15th of the relevant Hebrew month). That said, this Kat assumes that in most traditions, be they secular or religious, there is a single "New Year". As such, the question remains: how has term fared on the trade mark registry?

Curiosity having gotten the best of me, this Kat performed a simple, feline-like search for the term "New Year" on the USPTO. The results are interesting. There are 166 marks that contain the words "New Year". This Kat then carried out a manual count and found that 112 out of the 166 reported marks are listed as "Dead". While I did not examine the reason why each of these 112 applications/registrations is now "Dead", my sense is that the main reason is that the term (or the composite mark of which it is a part) was found descriptive, and the applicant did not/could not provide sufficient evidence to overcome such a descriptiveness objection.

Thus, not suprisingly, in the United States register the mark NEW YEAR (serial no. 75282963) for "all alcoholic beverages and particularly including champagne, wine, liquor and liqueurs" is listed as Dead. So is the mark HAPPY NEW YEAR (serial no.75062570) for "artificial fireplace logs 2000". Marks of similar descriptiveness ilk, such as HAPPY NEW YEAR 2000, TIMES SQUARE NEW YEAR'S EVE BALL and THE NEW YEAR'S EVE BALL LOWERING CEREMONY AT TIMES SQUARE, can be found throughout the list of 166 marks.

On the other hand, the mark NEW YEAR, NEW CELEBRATION (reg. no. 2202280) is registered "for printed matter, namely, free-standing newspaper inserts containing third-party advertisements and coupons related to health and fitness". Even more interesting is the registration of the mark AMERICA'S NEW YEAR CELEBRATION (reg. no. 2956701) for "entertainment and educational services namely, organizing, promoting and staging of annual cultural events, including floral pageants, parades, concerns, equistratian presentations, [and] sporting events" (reg. no. 2956701).

The registrant here is Padsadena Tournament of Roses Association. Translating this for non-Americans, it means that the registrant is the body behind a famous float and flower-adorned parade, known as the Rose Bowl Parade, that has been become an iconic part of the New Year's holiday in America. If there is any event that is "America's New Year Celebration", it is the Rose Bowl parade. And yet ....

The fact nevertheless remains that the overwhelming number of applied-for marks containing the words ""New Year" are no longer registered. Minutes before this Kat runs out to celebrate New Year's Eve (in its generic sense), he wondered whether the results that he found regarding the mark on the USPTO database point to an interesting aspect of registrability.

Thus, under (at least) the U.S. system, generations of trade mark professionals have been taught that an arbitrary mark is inherently distinctive -- if it is removed from its core meaning. A popular example is the word "apple", which is generic with respect to the fruit by the same name, but inherently distinctive with respect to computer products and musical records. That computers and music have converged complicated the matter from the point of view of confusion, as witnessed over nearly two decades of litigation, but it does not change the basic point about the essence of an arbitrary mark. This Kat found 3036 marks on the USPTO containing the word APPLE; his first impression is that the "Live" marks far outnumber the "Dead" marks.

And so the question--why the difference between "apple", on the one hand, and "new year", on the other hand, both of them being arbitrary terms when not used in their core sense, with respect to their respective fates on the USPTO? It seems to this Kat that the difference can be explained by the nature of the core meaning conferred by each of the terms.

Beyond the core meaning for the term "apple" as a type of fruit, the only extensions that come to mind are in relation to health ("an apple a day keeps the doctor away") and seduction (think Adam and Eve). As for "new year", beyond its meaning as the beginning of the calendar year, a much wider variety of extensions is suggested. One thinks of "a new beginning", "renewal", "revelry", "American football and parades" -- the list goes on and on. As such, the range of possible meanings that can be connected to the term "new year" is much broader than that of the word "apple". When these additional possible associations are connected with the core meaning of the beginning of a new year, the potential scope of use of the term in a descriptive sense is much more extensive.

However each of you feels about the value of the term "new year" as a trade mark, one thing is for certain for this Kat, as well as all my fellow Kats: we wish you all the best for 2012.

Adecision in the field of freedom of expression versus personality right by Germany's highest court the Federal Constitutional Court otherwise known as Bundesverfassungsgericht or "BVerfG" has caught this Kat's eye (case reference: 1 BvR 927/08).

Not unexpectedly, the case concerned a media report mentioning Princess Caroline of Hanover. The elegant princess and sister of Prince Albert of Monaco has written German legal history in the field of personality and privacy rights and most German law students will have heard of the famous "Caroline decisions"(see the IPKat report here by way of historic example; dated 2004).

On 8 December 2011, the Bundesverfassungsgericht allowed a constitutional complaint by the German glossy magazine BUNTE. BUNTE filed the complaint against a private law injunction which had prevented the magazine to publish a particular article. BUNTE invoked an infringement of its constitutional right of freedom of expression and freedom of press under Article 5 (1) Sentences 1, 2 of the German constitution (Grundgesetz). So what had happened? BUNTE had published an article about the Arlberg skiing region, which included a description of the scenery as well as reports about local hotels, the hoteliers themselves and it discussed the great number of celebrity tourists. The report also referred Princess Caroline of Hanover and the article, inter alia, mentioned that she "goes skiing in Zürs every year- mostly with her family", the Princess acted low key and carried her skis herself. The report did not include any photos of the Princess.

The Bundesverfassungsgericht agreed with BUNTE and sent the matter back to the Regional Court of Berlin for a new decision stating that the lower private law courts instances had incorrectly assessed the meaning and scope of the right of freedom of expression and given too much importance to the Princess's personality right. The court found that the article in question did not primarily describe a holiday scene as part of the Princess's personal life. Her holiday habits were only mentioned by way of an aside and not in any detail. Insofar as text reports are concerned the protection afforded by the personality right, Articles 2 (1) and 1 (1) Grundgesetz was not as far reaching as the protection afforded when it concerned the publication of images. In particular, the personality right did not protect an individual from being individually named in a report. When it comes to short and concise paragraphs which only affect the " outer private sphere" but not the "intimate sphere" of an individual , freedom of expression should not be outweighed by the personality rights of the original claimant, Princess Caroline. The court added that the BUNTE article neither contained information that was factually incorrect, it mostly referred to "appearances" and did not reveal any concrete details of the Princess's actual holiday destination or holiday time.

This is the right decision, says this Kat, since it confirms the court's previous case law in this field. This Kat does, however, very much enjoy how the Princess's relentless court cases help to further refine the law in this field.

Friday, 30 December 2011

The International Free and Open Source Software Law Book describes itself as "a new type of lawbook", which indeed it is. The publishers explain: as legal systems differ throughout the world there are significant differences in how Free and Open Source Software licences are treated in different countries, and it can be difficult to obtain reliable information on national interpretations. The International Free and Open Source Software Law Book engages with this by providing a clear yet thorough analysis of Free and Open Source legal matters written and maintained by local experts [in 13 jurisdictions -- 10 in Europe plus the United States, China and Israel], and by inviting everyone to assist in improving or expanding the content [employing the principles of open innovation, Merpel imagines].

The publication is targeted towards lawyers, jurists and academics, and positioned as an international benchmark reference work. It provides an introduction to software protection, a general analysis of FOSS under local legislation and an overview of local FOSS cases (if any) for each country covered. While it would be invidious to pluck out any one chapter for particular praise, it should be placed on record that the chapter on Poland is authored by the IPKat's friend and fellow blogger (here and here), the talented Tomasz Rychlicki.

Further details of this book, together with its complete text and the facility to post comments on the individual chapters, can be harvested from its website here.

EU Electronic Communications Law: Competition & Regulation in the European Telecommunications Market, by Paul Nihoul and Peter Rodford, is now in its second edition. It's not exactly laugh-a-minute stuff, being a very serious account of a notoriously difficult and professionally demanding subject. Paul Nihoul is an academic who hails from the "other" UCL -- the Université Catholique de Louvain -- and his co-author Peter Rodford, formerly Head of the European Commission unit responsible for regulatory policy in electronic communications and took part on behalf of the Commission in the recent negotiation with the European Parliament and Council on the amendments to the EU regulatory framework, is now a visiting professor at the College of Europe.

So what does the publisher, Oxford University Press, have to say about this work, which appears seven years -- a very long time in European Union law -- after the first edition?

"An established authority in the field, this is the core reference work for practitioners on electronic communications in the European Union. Giving insight into the regulations, the work provides a thorough analysis of the [large number of] competition rules and [hugely complex] regulatory framework applicable to electronic communications networks and services within the European Union. Electronic communications encompass all forms of electronic transmission of information, including telecommunications, broadcasting, and the internet. This second edition is updated to reflect the new regulatory package which has made changes to some of the fundamental mechanisms. A brand new section on data protection also features, giving an authoritative account of the legislation in the important new area of privacy protection in electronic networks [an area in which, once the legislators have done their job, the judges are now doing theirs: see for example Case C- Scarlet, noted here by the IPKat].

Detailed coverage of the recent case law of the Europan courts is provided including the European Commission's cases on the coordination mechanism for the relations between national regulatory authorities [this is one area in which the relationship of regulatory laws to IP laws tends might be a good PhD subject for some enthusiastic researcher ...]".

Trademark and Copyright Litigation is the title of a fascinating work by Mark V.B. Partridge and Phillip Barengolts. Subtitled 'Forms and Analysis--Volume 1: Cease-and-Desist Demands through Electronic Discovery', this is a book that looks set for a sequel, or more likely to several. The first-named author, when he's not serving as an adjunct professor at the John Marshall Law School, heads the eponymous law firm of Partridge IP Law P.C.; the second, a senior associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, is also a highly capable blogger on Pattishall's domesticated IP blog, which makes this reviewer think that he could do an excellent job as a free-range blogger if ever the opportunity materialised.

Anyway, what is this book about, apart from an attempt to wrap the heterogenous legal phenomena of copyright and trade mark litigation within the same covers? The publishers, Oxford University Press, kindly explain:

"Trademark and copyright litigation has become increasingly complex reflecting the ever increasing share of value represented by brands and creative works [and, in the US, the rapid development of new media in which infringement may occur and the creativity of lawyers in responding to new factual scenarios as well as new laws, says the IPKat]. As a result, there is a growing demand for practice-tested advice and related to winning strategies. Trademark and Copyright Litigation: Forms and Practice ... is designed to satisfy that demand by offering the actual and recommended sample documents for federal court trademark and copyright litigation. Presented in chronological order, the forms proceed from the inception of a case through trial and appeal, (i.e., complaint, answer, discovery requests, motions and supporting memoranda, preparation outlines, pretrial orders, witness outlines, appeal documents and briefs)".

The information contained in this lengthy but surprisingly readable volume has been created and collected by the authors from existing materials obtained from their own practice, as well as from other attorneys and court records. Unusually, the book features actual documents from well-known trade mark and copyright cases, garnished with commentary on the strengths, and, in some instances, the weaknesses of these real-world examples.

This is an accessible book which everyone from students through to seasoned practitioners can enjoy and benefit from, whether in terms of learning what to do or admiring/criticising how colleagues have done it.

Entertainment Litigation, edited by Charles J. Harder, is a larger-than-life book which is the consequence of some larger-than-life litigation involving some larger-than-life celebrity egos. The author, a litigation partner at Wolf, Rifkin, Shapiro, Schulman & Rabkin LLP, Los Angeles, has represented Sandra Bullock, Cameron Diaz, Clint Eastwood, Kate Hudson, Diane Keaton, Mandy Moore, Michelle Pfeiffer, Governor Arnold Schwarzenegger, Denzel Washington, Bruce Willis, and the rights holders of Marlon Brando and Humphrey Bogart, so he can at least claim some familiarity with the subject matter of this weighty, somewhat ungainly tome. The text covers a broad swathe of entertainment litigation, including not just mainstream IP and related issues but some state law topics with which non-US readers are likely to be unfamilar. These include California's Anti-SLAPP law. In short, this book looks very instructive and this reviewer looks forward to reading it when the time and the opportunity arise.

Following the recent IPKat posts concerning the provenance of LEGO bricks (here and here), this Kat has continued to receive correspondence from nostalgia-driven IP lawyers, litigants and leading personalities who simply want to have it recorded for posterity that some of the happiest moments of their lives were spent playing with nearly indestructible brightly coloured plastic bricks. To please them and others, the Kat features two illustrations here. To the left is an illustration taken from the specification of Hilary Page's patent. To the right is a picture of a box of Kiddicraft Self-Locking Building Bricks -- a real mouthful when compared to the short, snappy trade mark Lego".

There is no truth in the rumour that
IPReg is considering the introduction
of automated IP Litigators ...

IPReg -- the UK's Intellectual Property Regulation Board -- is the body that oversees examinations and professional training for the nation's patent and trade mark attorneys. It is also the body that deals with the representation by those professions of their clients in litigation. Earlier this month an announcement on the website of IPReg proclaimed:

"We have recently launched our 2nd Consultation on Litigators' Rights and the consultation papers can be found in the Consultations section of our website. For the IPReg response document to the 1st consultation followthis link"

The IPKat's attention was drawn to this item by Nicholas Fox (Of Counsel, Simmons & Simmons LLP), who observes that this consultation may be quite a rare event -- a consultation in which a regulator actually listened to its consultees. The IPReg response document, which is not very long, makes fascinating reading: it covers many of our favourite debating points too: How do you define "intellectual property"? How do you treat the fact that IP practitioners aren't generally expert in all areas of IP? How can IP litigators be suitably trained -- and kept fit post-training? And who pays for all of this?

Around the weblogs. The 1709 Blog's '12 for 2012' series of authors and creators who died in 1941 and whose works will be unprotected by copyright in "life plus 70 year" term countries from 2012 has now posted notes on Elizabeth Madox Roberts and Virginia Woolf. On the same blog, Asim Singh brings us up to date on the French position regarding remuneration for private copying. There's also a note by Ian P. Hartwell for the IP Finance blog on the need to put intellectual asset management within its sectoral context, here. Finally, Art & Artifice features Albrecht Dürer's response to sellers of 'AD' fakes.

There is no dinner at Tiffany's. "Tiffany's takes a bite out of Coca-Cola's Big Apple dream offer"is the title of this newsy piece in The Telegraph which the IPKat's friend Kingsley Egbuonu has drawn to his attention. At its heart is an imaginative British promotion for the SAB Miller-owned Appletiser drink which is made and sold in the UK by Coca-Cola. The promotion was offering a dream trip to New York with flights, accommodation, a Broadway show and limousine transfers for two -- leading up to "dinner for two at Tiffany's 5th Avenue store followed by a personal shopping experience and a £1,000 Tiffany's gift card". Tiffany's has objected and issued legal proceedings against Coca-Cola, alleging trade mark infringement and declaring:

"There is no dinner at Tiffany's. There is no personal shopping experience. These things are only organised by invitation from Tiffany's. The issue we have is that Coca-Cola launched its promotion using the Tiffany's trade mark without our authorisation".

Tiffany's is also tilting its legal weaponry against the Asda (Walmart), Tesco, Sainsbury's and Morrisons supermarket chains, at least three of which are reputed to have settled. Fascinating, says Merpel, but is there a trade mark infringement ...?

Thursday, 29 December 2011

One way for academics
to attract the interest of business
studies students is to turn up for
classes wearing a thought-
provoking hat ...

The IPKat's Anglo-Danish friend and scholar Matthew J. Elsmore(Lektor, Associate Professor, Centre for International Business Law, Aarhus School of Business), has written to him as follows, in the end-of-year spirit of giving and receiving:

"The giving bit

As I try to write some fresh material for a non-law and non-IP audience about IP, it has come to my attention that to do a really good job I need to explain the terminology of IP (and IP law) in a clear and accessible way. This is part of laying the foundation for all the later stuff. My intended audience is business graduates taking elective courses on business and IP in a global setting. My words will, I hope, form part of the reading materials for several new IP-related courses I am involved with designing at Aarhus University in Denmark.

At the beginning of my writing process I have naturally come across the terms “IP” and “IPRs”. “IP” is fine. I am happy with my definition. I can explain it to businesses in a way they will understand. But why “IPRs” and why the use of the word “rights”? I add that my main target group is the future SME part of the business graduate community.

I ask because law as much about obligations as it is about rights (and sometimes more so the former). IP law, and IPRs, may be a case in point. The ‘negative’ nature of the IP right means it is very much all about what legally speaking others are not allowed to do (with the IP right), rather than what (positive) rights there are (either for them as the ‘user’ or the IP right owner). For me, the law is not couched in these ‘positive’ or enabling terms. I realise there is some circularity here, and that I am generalising, but I hope the reader gets my point.

I’m not completely sure if this is purely an academic point, but my instincts and the possible look on my audience’s face tend to make me think it is more than semantics.

As lawyers we know that the law is set up to start with exclusivity of an IP award and it sort of works backwards from there. I can understand this: it is easier for the law to define what is not allowed rather than what is following an IP award. OK – but using IPRs to describe this might not make sense for a small business person.

Anyway, this very brief explanation leads me to suggest why not therefore call IPRs “IPOs”, i.e. Intellectual Property Obligations (not initial public offerings). One answer is because that abbreviation is vulnerable to the same points I have just made, albeit a little less so than for “rights”. The best thing would be to use a neutral name and I therefore suggest “IPL” as in Intellectual Property Law. I'm sure this is not innovative but I have never actually seen or heard it. Given the diversity of all that comes within the umbrella term of IP and IP law, the IPL term makes the most sense for me. It is rather odd that I have never read or heard this title (I'm sure others have). But more important is to ask whether this is a missed opportunity? I wonder if such a neutral expression goes some small way to de-politicising the oft-highly charged IP/policy/trade discussion which often starts with “IPRs” and inevitably from there fuels a sort of “IP haves and IP have-nots” ensuing debate and negotiation. In my humble view, the names of things are rather important (especially for politicians): first impressions and misperceptions, and books and their covers, and all that kind of stuff. Perhaps this is all a bit optimistic, and idealistic even, but if you can’t make a wish at Christmas, then can you .…

The receiving bit

My request of the IPKat teams and readers relates to the giving bit, and in particular, the business/SME audience I referred to above. I am trying to come up with a snappy sexy title for the teaching course I mentioned. The optional course is based in Denmark, delivered and orally examined in English, and mainly offered at the masters’ level. The non-law non-IP students are business-focused and international in flavour (they come from all over), and about to hit the global market with their ideas and ambitions. The course is enabling, aiming to be practical with case studies, i.e. leading with business activities and decisions and explaining the IP (law) story afterwards (not the other way round – which in my view is rather artificial and not all that businesslike). And, rather than using heavy IP law language, the course will try to "translate" all the law stuff into usable plain IP for business English. But despite my good intentions, I need help to sell this course. And for my possible customers, as in the ‘real world’ of consumer-facing business, the names of things (again) can be critical. Are there any suggestions for what the title of my course could be? Once I have the name, I can plug the course (here)! And if the final name I use comes from this blog as source, I will naturally pay the due moral and legal homage that is warranted.

In anticipation of some interesting comments on the above, I wish all those involved with the IPKat “Godt Nytår” (or “Happy New Year” in Danish)".

The IPKat fancies a title with the words "intellectual asset" in it. After all, an intellectual property right in the hands of it owner is an asset, but so too is the content of the right in the hands of competitors, consumers and indeed anyone else. Merpel fancies scrapping the word "intellectual" altogether. Perhaps "artificial, arbitrary and sometimes beneficial but always interesting rights in random intangibles" might just do the trick. But what do readers think?

Wednesday, 28 December 2011

This Kat would like to say a big "thank you" to the people who have emailed him with their kind words concerning the recent making available of a number of his old IP history writings in this weblog's Past Historic series. For the convenience of people who have been chasing these items up, the IPKat is taking this opportunity at the relatively quiet year-end to compile a little list of all the Past Historic posts for ease of reference:

Having determined that this document was to all
intents and purposes unintelligible, historians soon
realised that they had stumbled on an ancient
Egyptian patent specification ...

Around the weblogs. The 1709 Blog is running a series of '12 for 2012', these being 12 creators of copyright works who died in 1941 and whose works come out of copyright in 2012 in countries which operate a "life plus 70 years" term. The first four profiled creators are James Joyce, Andrew Barton ‘Banjo’ Paterson, ‘La Bolduc’ – Mary Rose-Anna Bolduc, née Travers -- and Isaak Babel. IP Tango's Patricia Covarrubia reports on the continuing IP filing boom in Brazil here.

A genuine Diophy?

The IPKat was alerted to this news item by a post by Charles Colman on the Fashion+IP LinkedIn Group on a new handbag battle which has reached as far as the blog pages of the Wall Street Journal. In "Louis Vuitton Sues Warner Bros. Over ‘Hangover II’ Bag, Amazon App Causes Stir, FedEx Responds to Viral Video" [what an ungainly title!] by Robin Kawakami, it is reported that luxury litigator Louis Vuitton has filed suit against Warner Bros. in a New Court Federal Court, alleging that a handbag featured in the movie “The Hangover Part II” is a fake. Apparently a character in the movie carries a bag marked LVM and admonishes another character: “Careful, that is a Louis Vuitton.” -- but it isn't. According to The Hollywood Reporter, the bag may be a fake Louis Vuitton but it's a genuine Diophy, this being a Chinese-American company against which LV is already litigating. Merpel innocently asks whether the description of a fake bag as a genuine one in the course of a movie could be made to fit within the definition of trade mark infringement which is currently employed in Europe: it doesn't seem to be in the course of trade ...

"WIPO Welcomes Australian Donation to Support IP Capacity-Building Projects" is the title of a recent media release from the World Intellectual Property Organization. The news behind the headlines is that Australia has donated 2 million Australian dollars for projects to help developing and least developing countries build capacity in the field of intellectual property (IP) and to ensure they are in a position to participate actively in the benefits of innovation and the knowledge economy. This is part of a 16 million Australian dollar contribution which Australia is making in order to help developing and least developed countries benefit through global trade. The IPKat says, he's sure it wouldn't cost as much as 2 million Aussie bucks to connect Africa's woefully unconnected national intellectual property websites to the internet, so that people can at least access the information they possess without having to go there in person or rely on slower, less reliable technologies. If you want an idea of the scale of the problem, read through Kingsley Egbuonu's weekly 'A to Z' tour of national intellectual property office websites on Afro-IP (he's up to L for Libya right now) and see how few of them are actually connected.

Issue 3 of Volume 8 of the excellent online journal scripted, which hails from the Centre for Research in Intellectual Property and Technology Law, based in the School of Law, University of Edinburgh, is now available for your perusal. You can check out the contents here. This Kat's picks from this bunch are "Music and Dance: Beyond Copyright Text?", by Charlotte Waelde and Philip Schlesinger, and "Forgetting Footprints, Shunning Shadows. A Critical Analysis Of The “Right To Be Forgotten” In Big Data Practice" by Bert-Jaap Koops. There's plenty more good stuff too!

ARUC and a hard place. ARUC is the Association for Resistance to Unfair Competition, the Ukrainian cell of the International League of Competition Law (LIDC). The Association is producing quite a reasonable English-language newsletter, which you can check out here. Not being an expert in Ukrainian matters, this Kat has always felt that this vast Eastern European state is not a naturally fertile soil in which the principles of competition can take root an sprout; he wishes the Association the best of luck in its ventures and hopes to hear more about it in due course.

Tuesday, 27 December 2011

The Essentials of Patent Claim Drafting, by Morgan D. Rosenberg, has recently been published out of the New York desk of Oxford University Press. Morgan is Director of Middle East Operations, Director of Middle East Operations at Litman Law Offices, Manassas, Virginia, but he has still found time to put this impressive work together. A regular contributor to Intellectual Property Today, he has specialised in drafting patent applications for the past one and a half decades, a fact that may fill the reader with admiration or sympathy, depending on his view of patent drafting and the various demands made on those who draft them by clients and officials.

According to the publisher's web-blurb, this book is "a practical how-to guide on the drafting of patent claims in U.S. patent applications". That is not to say that it is without interest to the non-US reader, and with increasing cooperation between the major national and regional offices the relevance of the US experience to those outside the jurisdiction is only likely to increase. The web-blurb continues:

"The claims of a patent application are, in many ways, the most important part of the application [Come now, surely the claims can't be that important, can they? Or rather, isn't this stating the obvious ...?]. The claims define the legal scope of patent protection granted by an issued patent, and also determine the course of the patent prosecution process. A properly drafted patent claim must take into account technical breadth, legal strategy, and conformance with U.S. statutory law, U.S. Patent and Trademark Office guidelines, and over a hundred years of case law [Ah, now we're talking!].

The Essentials of Patent Claim Drafting is a practical guide to the drafting of patent claims in U.S. patent applications. The actual mechanics of assembling both basic and complex claims are covered in-depth from simple mechanical cases to complex chemical and pharmaceutical cases. The emphasis is on the how-to of claim drafting, rather than on the history and theory of claiming [This is true but, in focusing on the how-to, the author subtly incorporates the theory, or at least enough of it to inform the reader the answer to the question why the how-to teaches one technique rather than another]. It contains multiple examples for all types of claims which a practitioner is likely to draft, and provides an easy reference for the drafting of particular types of claims. The Essentials of Patent Claim Drafting is written primarily for novice patent attorneys and patent agents, as well as law students and those studying for the Patent Bar Exam ..."

This is the latest in a number of simple, unpretentious and quite robust texts from OUP's New York office that do what they say on the cover. The IPKat has been building up a useful collection them, even though Merpel thinks the covers are so boring and look dreadful when reproduced on this weblog. For those readers who need a clear framework within which to grasp the essentials of US patent claim drafting without being blinded by legal science and the rampant cancer of never-ending citations, this book has much to commend it.

Intellectual Property Strategies for the 21st Century Corporation: A Shift in Strategic and Financial Management, edited by Lanning G. Bryer, Scott J. Lebson and Matthew D. Asbell, is the first of a pair of books from the same stable and with the same pedigree, the second of which was actually reviewed first (see post here). Lest it be thought that the reviewing of these two tomes in reverse order was the result of some prank or perversity on the part of this weblog, it should be explained that responsibility must be laid at the feet of United States -- a remarkable civilisation which can send men to the Moon and direct its weaponry with pinpoint accuracy at tiny targets but which had some difficulties in landing Intellectual Property Strategies for the 21st Century Corporation: A Shift in Strategic and Financial Management within convenient reviewing distance of this blogger's semi-detached house in North West London.

Anyway, this trio of Ladas & Parry IP enthusiasts has put together a more than passable, indeed enjoyable and readable, collection of essays. As their publisher states:

"The world has changed significantly in the past decade, resulting in new behavior and practice related to the ownership and management of intellectual property [Not half! Remember the days before trolls, the purchase of keywords, search engine optimisation, green, patents, peer-to-peer file-sharing, open innovation ... ]. This book helps executives, attorneys, accountants, managers, owners, and others understand the legal, technological, economic, and cultural changes that have affected IP ownership and management. It provides case studies, practical examples and advice from seasoned and enduring professionals who have adopted new and streamlined methods and practices whether as in-house or outside counsel, or service providers".

With one eye on continued and accelerating technological change, and the other on the roller-coaster ride that takes us from recession to not-quite-a-recovery and back to recession again, the team compiling this book has made it both relevant and contemporary. This will call for updating at regular intervals, for sure, so read it while it's still current!

Monday, 26 December 2011

Thanks again to the UK's Intellectual Property Office (IPO), the IPKat has learned of yet another trade mark question which is to be referred to the Court of Justice so that a preliminary ruling can be made on a question of law. According to theinformation provided by the IPO, it's the dog-related Case C-561/11 Fédération Cynologique Internationale v Federación Canina Internacional de Perros de Pura Raza and the referring court is the Juzgado de lo Mercantil No 1 de Alicante (sitting as Community Trade Mark Court No 1). The question runs like this:

"In proceedings for infringement of the exclusive right conferred by a Community trade mark, does the right to prevent the use thereof by third parties in the course of trade provided for in Article 9(1) of Council Regulation ... 207/2009 ... on the Community trade mark extend to any third party who uses a sign that involves a likelihood of confusion (because it is similar to the Community trade mark and the services or goods are similar) or, on the contrary, is the third party who uses that sign (capable of being confused) which has been registered in his name as a Community trade mark excluded until such time as that subsequent trade mark registration has been declared invalid?"

If you want to tell the UK government what you think the answer is, and whether it should be thinking of making any representations to the Court of Justice, you have to email policy@ipo.gsi.gov.uk before this Thursday, 29 December 2011.

A new logo for
WIPO, to match
its sunny mood?

The IPKat's friends at the World Intellectual Property Organization (WIPO) are chortling with glee at the good news that IP filings worldwide rebounded strongly in 2010, after a considerable decline in 2009. According to WIPO, patent filings rose by 7.2%, following a 3.6% decline in 2009, while trade mark filings rose by 11.8%, having fallen by 2.6% in 2009. China and the US accounted for the greatest share of the increased filings. The 11.8% increase in trade mark applications was the largest growth since 2000. Industrial designs applications rose by 13%, having declined over the previous two years -- also mainly on account of high growth in China, which accounted for 83% of total growth. Europe is starting to look like a non-starter ...

Around the weblogs. Afro-IP's Kingsley Egbuonu's A to Z tour of official IP sites in Africa takes him to one of the focal points of 2011's Arab Spring -- Libya. Bulgaria celebrates its first Protected Geographical Indication, this being a sausage of massive historical and cultural significance: you can read about the ethnography of this sausage on Class 46 here. The jiplp weblog reproduces the January editorial of the Journal of Intellectual Property Law and Practice, on open innovation, and also features a special offer by OUP of 20% off the price of the 2nd edition of Olivier Vrins and Marius Schneider's excellent book on Border Measures. If patents in Portugal and the resolution of medical IP disputes is more to your fancy, then take a look at Pedro Malaquias's piece for PatLit on a particularly unusual bit of legislative reform, here.

Sunday, 25 December 2011

Have you ever wondered about consumers who buy counterfeit products? What sort of people might they be? If so, the IPKat can share with you the information which he has recently received from Roy Crozier (a partner in the Manchester-based law firm Clarke Willmott LLP), who writes:

"I thought I would send to you a link to a counterfeiting survey we have recently commissioned with our client ghd[if you're unfamiliar with this company, take a look at its products: these aren't luxury goods with vast per-item profit margins, but hair-treatment products which are generally beneath the level at which it's worth making official complaints and taking legal proceedings if you discover you've bought an infringing product]. The survey, which is one of the biggest of its kind, was of 2,081 adults in the UK. It was carried out by YouGov and was representative in terms of age and social background etc. The survey can be found here.

The survey, revealed that 21% of men interviewed across the UK had knowingly bought fake goods, which is 50% more than was the case with women interviewed (14%) [it would be good to know how this breaks down as between different product categories: if recorded music and films were removed, would the gender difference be so pronounced?]. A further 10% of men said that they had been tempted to buy counterfeits. Across both genders, 17% had purchased such goods with an additional 9% admitting that they had been tempted to do so.

Less likely to buy fakes ...

The survey confirmed our expectations that older people are less likely to purchase counterfeit goods (22% of 25-34 year olds compared to 13% of the over 55s) [might that be because they buy fewer goods online, the Kat wonders]. As to the main reasons why they would consider buying fake goods, more than a fifth of adults (22%) stated that it was due to the fact that they are cheaper, whilst 14% put it down to having less money to spend as a result of the recession [those two reasons probably overlap, so the difference between them may not be too significant].

More than a fifth (22%) said that they would be happy to receive such goods in the lead-up to Christmas [This is a frighteningly high figure, given that counterfeits are less likely to fulfil manufacturing and consumer protection regulations] with 10% stating they would as friends and family are struggling to pay for presents (10%). Again there were substantial regional variations in attitudes with 34% in Scotland stating that they would be happy to receive such goods compared to only 17% in the South West of England.

The top counterfeit products that people would buy or receive in the future are shoes and clothing (14% would consider buying and 16% would be happy to receive them respectively), watches and jewellery (11% and 14% respectively) and DVDs, CDs and computer games (11% and 13% respectively). Bizarrely 9% of people in Northern Ireland would consider buying counterfeit alcohol or cigarettes [ah, but would they consider drinking or smoking them ...?]. In London it was a mere 1% whilst in the UK as a whole it was 4%.

In England, the highest percentage of people who have bought counterfeit products was in London (19%), whilst in the UK as a whole it was Northern Ireland (23%), followed by Scotland (22%). The area with the lowest percentage of people who had bought counterfeit products was the East of England (13%).

The research also highlighted that [only] 61% of consumers interviewed are worried about becoming a victim of counterfeit goods in the lead up to Christmas. Over a third (38%) are worried they might mistakenly buy counterfeit goods as more come on-stream as Christmas approached. 44% are worried about providing credit/debit card details to potentially unscrupulous people, 28% about buying something online and not receiving it, and 26% about product safety".

If nothing else, it sounds as though some sort of pro-IP charm offensive is required for young male smokers and drinkers in Northern Ireland, says Merpel.

The IPKat, together with Merpel and the rest of the team, would like to take this opportunity to wish all of their readers, correspondents, supporters, critics and comment-posters a pleasant and peaceful end-of-year break and a smooth transition to 2012.

While it is invidious to single out any individuals or groups within the intellectual property community for special mention, an exception is made in favour of

the good men and women who serve as members of the judiciary,

those who work for (or is it against?) our interests as officers and employees of the European Commission,

the policy-makers at WIPO, the WTO, international and national IP offices,

the lobby groups whose actions are so often equal and opposite,

IP owners, their licensees, infringers and customers

without whom this weblog would have precious little to write about.

"Bless you all", chorus the Kats, "and thanks for your unsolicited expressions of goodwill, most of which will have to go without a personal response because there have been so many of them, but which are all none the less very much appreciated".

Saturday, 24 December 2011

On the surface things look very calm, but who knows
what further IP secrets will come from Legoland ...?

The IPKat has received an epistle from The Right Honourable Professor Sir Robin Jacob, who has kindly taken time out from his crusade against some of the worst effects of the unitary patent system to provide some further information on the history of the LEGO play-brick (on which see this Kat's earlier post here). Writes Sir Robin:

"The Lego story would not be complete without recording the fact that the original Lego brick was a copy -- an exact copy, of a Kiddicraft brick designed and patented (in the UK not Denmark) before the War by Hilary Page.

Chirstiansen saw the potential, improved the moulding, invented the inner tube to improve the grip. But the size and dimensions are Page's -- the brick is imperial, not metric.

Lego never publicly acknowledge this, though they talk about their history.

Page died in about 1957 by gassing himself in his mistresses's oven. Lego bought up any copyrights he had in the drawings for the brick. None were actually ever found, but Lego said the probability was very high that there would have been such drawings and produced a reconstruction.

Thus when they sued Tyco they sued on Page drawings as well as their later ones. In the end there was no copyright in the Page drawings (s.22 of the Copyright Act 1911: there being much argument about whether they were registrable as designs) and no copyright in the Lego re-draws because they weren't original".

This Kat thanks Sir Robin for this information and hopes that it will be put to good use by anyone who is contemplating an update of his 1987 article.

'Twas the night before Christmas and not a creature was stirring. Well, maybe just the odd IP lawyer. Christmas is up for sale. At least the domain name Christmas.co.uk is up for sale, according to a report in this week’s Financial Times. The same report highlighted a business run from the website www.santa.co.uk, which offers greeting messages from Father Christmas and -- according to the FT -- does extremely well on it. What is interesting from an intellectual property point of view is that the owner of this site also owns UK trade mark registrations for FATHER CHRISTMAS and for CYBERSANTA. Indeed a quick (and fairly cursory) look at the UK Intellectual Property Office database reveals that there are a huge number of registrations for marks containing or consisting of SANTA CLAUS and FATHER CHRISTMAS.

Is this therefore a trap for the unwary business which sends out its festive greetings, making prominent use of these well known terms? This is unlikely for a number of reasons, including the following;

Many of the registered trade marks are fairly intricate device marks or contain significant amounts of other text. There is therefore unlikely to be sufficient similarity between these marks and the signs used by most businesses;

Many of the trade marks are for fairly esoteric goods and services and/or specifically include goods relating to “Father Christmas”. Again therefore similarity is likely to be a hurdle;

Validity: given the widespread and very generic use of names such as “Father Christmas” and “Santa Claus”, any attempt to register a mark which claims a monopoly over the use of these words for use on festive type goods or services is likely to fail or be hopelessly invalid.

Additionally any such infringement action against the use of festive terms such as SANTA CLAUS or FATHER CHRISTMAS would be unlikely to even get off the ground because the use of these signs in a Christmas card or other festive greeting would not be liable to affect or be liable to affect one of the essential functions of a trade mark following the reasoning of the Court of Justice of the European Union in Case C-206/01Arsenal v Reed.

Similarly an action for passing off on the same facts is highly unlikely to succeed because even in the unlikely event that a relevant and meaningful goodwill be proved, the hurdle of showing an actionable misrepresentation is likely to be virtually insurmountable where the use is simply “ordinary festive” type use on a Christmas card.

Would Coke run this ad today? Or would
the implication that it contributed to obesity
in the elderly be a matter of concern?

Of more serious concern to businesses sending out Christmas cards and the like is the use of images, symbols and other characters which are owned by third parties. For example many large companies promote their brand by making full use of seasonally themed character images that are universally associated with their brand. Some well known examples include; Coca-Cola’s ‘Santa Claus’ character and Disney characters dressed in Santa Claus and elf costumes. These images are likely to be protected by both trade mark rights and copyright.

Numerous representations of the cartoon character Mickey Mouse are registered as trade marks and the extent of Disney’s reputation and goodwill in those marks is likely to give it every chance of success in trade mark infringements even if (as is likely to be the case) the registrations are not in completely relevant classes and similarly the fact that the image used is slightly different to the ones registered is unlikely to be insurmountable. Indeed the trade mark use argument, i.e. that the use of the image on a Christmas card is not affecting or liable to affect the essential functions of the trade mark, will also be difficult to run in this scenario.

A passing-off action is also likely to succeed with goodwill/reputation in such cases almost a given and the misrepresentation being perhaps found in the fact that it will be assumed that the owner of the cartoon has endorsed the particular cards or business.

Even more difficult for the company who uses the image of a cartoon character on its festive greetings message will be copyright infringement. Assuming the cartoon character is still in copyright and the proprietor can establish ownership there is likely to be an irresistible inference of copying if the cartoon character is reproduced in any way. None of the obvious fair use type defences are likely to apply to use of an image on Christmas cards and it is unlikely that an incidental inclusion type argument would work in this context.

The real trap for the unwary is however in the use of images, symbols and characters that are not that well known as it seems unlikely that many businesses will decide to make use of Disney characters or other well known cartoon characters without first seeking the approval of the relevant proprietor. Indeed, this is where the real potential problem lies.

It can be difficult to pin a Santa image to any
specific earlier IP right

Trade mark rights (registered or otherwise) may be a problem in this scenario. Registered trade marks can of course be searched although it is notoriously difficult to search for a pure device mark. Passing-off type rights are more difficult although with both unregistered and registered trade mark rights the risk of infringement will generally decrease the less well known they are. Arguably it will only be the use of marks that belong to businesses in broadly the same area (and/or which are registered for goods/services in broadly the same area) which will be of most concern here and therefore taking simple precautions such as ensuring that images and the like that belong to a business in the same or related field are not used will at least decrease the risk of a problem.

Potentially more problematic however is copyright infringement. Broadly speaking, and as briefly discussed above, if you use someone else’s copyright work on your Christmas message then that will be copyright infringement and it is difficult to think of any complete defences that will apply, although there may be arguments about knowledge in some circumstances. Therefore, unless the business commissions a fresh piece of artwork for its Christmas message, licences the right to use an existing piece of artwork or takes care to select artwork which is sufficiently old not to be protected by copyright, there will always be a real possibility of copyright infringement. Indeed most images that one finds on the internet are likely to be the copyright of someone and it may therefore simply be a question of waiting to see whether the copyright owner finds out and then whether he or she decides to take action.

Other than all that…..MERRY CHRISTMAS!

This item was kindly written for the IPKat by Nick Phillips(no relation), who heads the IP practice at Barlow Robbins LLP.

Friday, 23 December 2011

As many readers will be aware, children's character merchandising is big business. And with any big business like this there often comes the risk that an unrelated party will claim that it had created the now phenonemally popular characters and seek a remedy for copyright infringement. One such instance occurred recently when a cartoonist tried to sue the BBC for millions by claiming that CBeebies bosses copied his characters: Michael Mitchell v BBC[2011] EWPCC 42. This week Mr Mitchell's claims for copyright infringement were refused by Judge Colin Birss QC sitting in the (still misnamed) Patents County Court.

Mr Mitchell alleged that the BBC had copied characters which he had created for a proposed multiracial ‘eco warrior’ children's TV show ‘The Bounce Bunch’ for its popular children's TV show 'Kerwhizz'. Mr Mitchell claimed that he created the characters in 2004 and had made the characters available online from around 2005. In October 2007, Mr Mitchell supplied his concept for the characters to the BBC Department dealing with programmes for children aged 6-12 years. In May 2008, the BBC decided not to pursue the project and informed Mr Mitchen. Mr Mitchell sought £2 million in damages for the 'striking similarities' between 'The Bounce Bunch' and 'Kerwhizz' characters which he claimed during the hearing were 'obvious to even a child'.

The BBC strongly denied the claim. It stated that Mr Mitchell's concept did not reach the department handling Kerwhizz as Kerwhizz is aimed at the 4 to 6 year old age group. Accordingly. it contended that its designers were not aware of Mr Mitchell's work and that the 'Kerwhizz' characters were developed from an original idea conceived in December 2005 and influenced by Japanese mangarobot characters. At the hearing, counsel for the BBC categorised Mr Mitchell's demands for millions in compensation as 'little more than blackmail' and 'extremely offensive to the [Kerwhizz] designers ... [whose] whole integrity is being impugned'.

Judge Birss QC approached the case in three stages. First, he considered Mr Mitchell's case about access and his case that the similarities were such as to shift the onus onto the BBC to explain how its designs arose. Second, he considered the BBC's positive case, that the Kerwhizz characters were designed independently of the Bounce Bunch. Third, he considered the matters overall and whether infringement had been made out, bearing in mind in particular Mr Mitchell's case on subconscious copying.

Access and Similarities

Judge Birss noted (at [9]) that Mr Mitchell's case on access on the internet had 'developed somewhat over time'. On the evidence, he was not satisfied (at [58]) that the main Bounch Bunch artwork was available to anyone before 2007. Therefore, any influence from the Bounce Bunch on Kerwhizz, if it happened, must have happened from 2007 onwards. Given that Mr Mitchell sent his concept to the BBC in October 2007, without considering the case of the BBC, it seemed to Judge Birss (at [53]) that there was at least sufficient evidence that someone could have had access to the Bounce Bunch for it to be appropriate to consider whether the similarities relied on, coupled with that evidence of a possibility of access, raise an inference of copying.

Judge Birss (at [54]) observed that although side by side the characters looked quite different and many of the similarities were at a high level of generality, there were a number of points which, prima facie, supported Mr Mitchell's case. These were the combination of the fact that the characters wear a form of armour with helmets and microphones, the colour scheme used for the three characters in Kerwhizz, and their ethnic mixture. In addition to this, a particular element which stood out was the blond hair flick or quiff on the blue suited character (Charlie/Twist). Although none of these points on their own would have been sufficient to raise an inference of copying, when they are considered as a combination, it seemed to Judge Birss (at [54]) that the onus then shifted to the BBC to explain how the Kerwhizz characters were produced.

Independent creation

The BBC denied that Mr Mitchell's designs had any influence on Kerwhizz at all. To support its position, the BBC provided detailed evidence from a number of relevant witnesses to explain what happened and how Kerwhizz came to be made. This evidence was almost entirely unchallenged by Mr Mitchell at the hearing.

Judge Birss found (at [105]) that the evidence in support of this part of the BBC's case was 'overwhelming' and he accepted that the relevant individuals who provided witness statements could not be said to have been aware of the Bounce Bunch at any relevant time. Judge Birss further found (at [105]) that the account given by these individuals left 'no room for a case of deliberate or conscious copying by any of them'. The qualification of 'deliberately or consciously' was included by Judge Birss because of the final argument on subconscious copying.

Subconcious copying

There were three elements which Judge Birss considered in relation to this issue: the degree of familiarity with the Bounce Bunch; the character of the work; and, the degree of objective similarity between the Bounce Bunch and the Kerwhizz characters.

After considering these factors in detail, Judge Birss found (at [143]) that the evidence did not support an inference of subconscious copying. This was because none of the designers were familiar with the Bounce Bunch at all. They were not aware that the designs were ever seen and there was simply no evidence the relevant people saw the Bounce Bunch albeit that they have now forgotten that they did. Further, Judge Birss found (at [144]) that the Bounce Bunch were not especially memorable. Even if they were seen, there was no reason why they would be retained. The similarities were not non-existent, but they are at a high level of generality. As Judge Birss had already accepted the BBC's account about how the designs came to be produced, he stated (at [144]) that it was 'utterly implausible' to graft a subconscious copying argument: there were cogent explanations for the origin of all the features and no reason to resort to a subconscious influence from the Bounce Bunch to explain Kerwhizz.

Accordingly, Judge Birss concluded (at [147]) that the Kerwhizz characters did not infringe Mr Mitchell's copyright and dismissed the action.

This Kat believes that this case illustrates the slippery nature of an allegation of subsconcious copying when it is combined with the reality of the internet. Given that so much information is now available to people, can one ever really rule out a case of subconscious influence?

If Merpel was ever involved in a subconscious copying case, she considers that she would be 'especially memorable'.

Before buying a used copyright
clearance person, do make sure
that non-one else has prior rights ...

"Not entirely sober" is how one of the IPKat's readers described himself when he sent in the following thoughts:

"The UK Government’s Copyright Consultation [noted on this weblog here] describes the process of clearing rights as economically negative, pure and simple. However, there are a great many people who earn their livings from clearing rights. It is a thriving service industry, employing thousands of people who are happily paying taxes ['Happily'? Merpel has her doubts ...] and spending their wages. Every time that the Government seeks to reduce “transactional costs”, there is less work for the rights-clearer to do. This might benefit the licensor and the licensee, but what about the service industry in the middle? It might be best to spend less time clearing rights, but it would be wrong to say that there are no negative economic consequences in reducing “transactional costs”.

Compare, for example, David Cameron’s beloved financial sector – they produce nothing, but merely provide a service of shifting money around. A complete economic understanding of copyright should surely include the accompanying service industries. People who mock this idea should first check whether they too do not earn their living by providing such a lowly service industry".

The IPKat recalls that service industries have not always had an easy time of it. Just think of all those scribes who were laid off when printing was introduced. Indeed, even in his own kittenhood he records the existence of another honourable profession -- the telephone operator -- whose services were indispensable for anyone seeking to call a friend or colleague outside their own town, never mind outside the jurisdiction. Having said that, rights clearance can have some positives too: apart from bringing legitimacy to otherwise infringing acts, it often has the effect of reuniting rights owners with rights which they did not know they had. One might call it a sort of low-grade third-party due diligence exercise.

Merpel says, be quiet, Kat -- the voice which is called for here is that of the Katonomist, Doctor Nic. She at least knows a thing or two about economics and might have some more useful things to say about an issue which has been raised because of the economic impact of the UK government's proposals.

The ninth and final item in the little bundle of photocopied pieces on IP history which this Kat researched and wrote back in the 1980s is an article which he wrote in 1987 after he left the safe haven of academe for the exciting world of business and commerce. It's a profile of one of the most spectacular successes in the world of toys, a product which has retained its fascination for young and old alike even in the age of electronic leisure products -- the Lego brick. Lego is truly the plastic with magnetic powers for those who fall within its spell.

This article is urgently in need of updating, since Lego's post-1987 history -- particularly its litigation -- has been far more lively than that of its earlier days; its marketing and product development are also worthy of comment and analysis as the company works hard to preserve its market position in an increasingly competitive environment. This Kat hopes that some kind reader will take up the challenge and review the Lego Empire's activities over the past quarter of a century.

"An Empire Built of Bricks" a Brief Appraisal of Lego" was first published in [1987] 12 European Intellectual Property Review 363 to 366. You can access it here.

Wednesday, 21 December 2011

Just in time for Christmas - another chapter in the never ending Gold Bunny dispute saga. This time again from Austria: Lindt vs. Hauswirth. Our readers may recall the ECJ's judgment in C‑529/07 Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH, also known as the "Easter bunnies' case", which was a reference for a preliminary ruling from Austria on the question of how to establish bad faith in trade mark invalidity proceedings (see the earlier IPKat reports here).

Several Austrian, German and Swiss sources now report that Austrian chocolate maker Hauswirth has to stop producing and distributing its golden Easter bunnies (see left) within the EU after a recent decision by the Higher Regional Court of Vienna.

This particular dispute has kept Austrian courts busy since 2004. In March this year the Commercial Court of Vienna (Wiener Handelsgericht) had decided that Hauswirth was no longer allowed to sell chocolate bunnies that are confusingly similar to Lindt’s bunnies (see to the right), a decision which Hauswirth intended to appeal. The Higher Regional Court of Vienna (Oberlandesgericht Wien) has now decided not to allow this appeal and confirmed the Handelsgericht's earlier decision of March 2011 holding that there is a likelihood of confusion between both types bunnies. Even though no leave for an ordinary appeal was granted, according to some news reports, Hauswirth can still try and appeal this matter to the Austrian Supreme Court(OGH).

I recently had occasion to revisit one of those issues in patent law that has always left this Kat perplexed. That issue is the recordal of a patent licence on various national registries. Consider, for example, section 87 of the Israel Patent Law, which provides that a patent licence, whether exclusive or non-exclusive, "is effective only as between the parties, unless it was registered under this Law." The provision seems simple enough on its face, until one tries to parse the provision. When that happens, the rationale and underpinning for the recording of licences becomes increasingly murky. And so, one is left with the question: what exactly is going on here?

Let's start by first digressing to trade marks. There was a time when the Anglo-inspired registered user provisions were in widespread effect, that registration of a licence was viewed as material for ensuring the validity of the licensed mark. The idea was that, by virtue of the recordal, there was a modicum of certainty that the licence met the quality control requirements that served as the legal bedrock for permitting trade mark licensing within the source theory framework. The most notable jurisdiction that provided for recordal of a trade mark licence was the UK. Even in the UK, however, the courts were not prepared to hold that recordal was madatory but merely permissive. The moral -- even when recordal of a licence could be seen as material to the validity of the underlying intellectual property right, i.e., trade marks, the law was reluctant to construe the obligation as required.

By contrast, there is no such necessary connection between a patent licence and recordal on the Registry. The patent right is not tied to use and, even for those jurisdictions that provide for a compulsory licence, such licensed use is not tied to the validity of the patent. The justification, if any, for recordal must be found elswhere. I can think of two possible reasons: (i) anchor the exclusive licensee's right of suit; (ii) provide notice to third parties. As a matter of providing a justification, the former seems doubtful, the latter insufficient, especially in light of the potentially undesirable consequences of being required to disclose the existence of a licence to the public.

As for the need for a recordal to confer a right of suit on the exclusive licensee, this Kat is not aware of any such requirement in any jurisdiction. Taking the Israeli provision as an example, the relevant statutory section on right of suit provides that an exclusive licensee has the same right of suit as the patentee. It does not, however, require that the exclusive licensee be recorded. Nor can this Kat come up with a compelling rationale as to why this should be the case. If there is any jurisdiction that does require recordal for this purpose, this Kat would be delighted to be informed.

As for putting third parties on notice, there is certainly a certain logic in recording a licence for this purpose. Under such a scheme, a third party who might enter into a later, purported "exclusive" licence is estopped from claiming that he was deceived, because the recordal constitutes constructive notice of the existence of the licence. That said, this possibility seems so remote and, frankly, it is not a front-and-centre issue in the larger picture of patent law and practice, certainly not to the extent that a fully-fledged recordal system should be put into place.

This conclusion is strengthened when one considers that the parties to the licence might have sound commercial or strategic reasons to keep the existence of the licence a secret. Given this possibility, it seems to be statutory overreach for the statutory regulation of patents to force the licensor and licensee to choose between compliance with the recordal requirement and protection of legitimate commercial interests. Moreover, unlike the treatment of trade mark licences, at least under the ancien regime, there does not appear to be any reasonable sanction that could be put in place in the event of failure to record a licence.

The upshot of this Kat's ruminations leads him to the conclusion: recordal of a patent licence is unnecessary, although a totally permissive system that allows the parties to record the licence as a form of notice to third parties is not out of the question. Against this backdrop, this Kat would be delighted to hear from readers about the position of the recordal of a patent licence in the reader's jurisdiction.

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